PTAB

IPR2021-00516

MG Freesites Ltd v. Scorpcast LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Video Distribution and Media Players
  • Brief Description: The ’278 patent relates to systems for interactive video playback. The technology enables a first user to upload a video to a remote system and then use an interface to add one or more images, with associated text and links, as interactive overlays that are displayed to a second user at specific, defined times during video playback.

3. Grounds for Unpatentability

Ground 1: Anticipation by Lanza - Claims 1, 2, 12, 14, 16-19, 24, 25, and 30 are anticipated by Lanza under 35 U.S.C. §102.

  • Prior Art Relied Upon: Lanza (Patent 7,735,101).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Lanza discloses every element of the challenged claims. Lanza describes a system for embedding user-generated "comments" into videos, where comments can include text, graphics (images), and web links (URLs). The system provides a user interface for a user to locate a video and another interface to add comments. A user can define the start and end time for a comment to appear via controls on a "time scroll bar." In its "COMPACT" display mode, Lanza displays these comments as an overlay on top of the video, synchronized with playback. The petition contended this maps directly to the ’278 patent’s system of uploading a video and adding timed image overlays with text and links. Lanza also discloses a "SHARE VIDEO" button, anticipating claims related to sharing controls.

Ground 2: Anticipation by Fink - Claims 1, 2, 4, 12, 14, 16-19, 24, 25, and 30 are anticipated by Fink under 35 U.S.C. §102.

  • Prior Art Relied Upon: Fink (Application # 2009/0300475).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Fink independently anticipates the same broad set of claims. Fink describes a system for adding and displaying interactive "annotations" to online videos. A user uploads a video to a hosting server and then uses an "annotation interface" to create annotations such as text boxes, thought bubbles, spotlights, and hyperlinks. The interface includes a visual timeline and scrubber bar with markers that a user can drag to define when and for how long an annotation is displayed as an overlay on the video. This allegedly discloses the core invention of defining the timing for image overlays. Fink also discloses a preview control for reviewing annotations before publishing and a URL area for sharing the video, mapping to other dependent claims.

Ground 3: Obviousness over Fink and Geer - Claims 1, 2, 4, 12, 14, 16-19, 24, 25, and 30 are obvious over Fink in view of Geer under 35 U.S.C. §103.

  • Prior Art Relied Upon: Fink (Application # 2009/0300475) and Geer (Application # 2011/0112915).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground was presented as an alternative to the anticipation argument in Ground 2. Petitioner argued that while Fink teaches a complete system for timed video annotations, Geer provides additional detail on displaying images as part of an overlay. Geer describes a system for displaying advertising content (e.g., pop-up ads) at strategic points during video playback, where product icons are displayed on the scrubber bar and trigger a corresponding advertisement overlay that can include an image, text, and a link.
    • Motivation to Combine: A POSITA would combine Geer's advertising overlays with Fink's annotation system to enable advertisement-based annotations. Fink’s system already displays annotations as "separate labeled visual objects," and a POSITA would have recognized that the product images taught by Geer are well-suited as a type of "visual object" for Fink's system, allowing for enhanced functionality like in-video product placement and purchasing.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because both Fink and Geer describe web-based interfaces for implementing their features. Integrating Geer's image-based overlay functionality would involve a straightforward update to Fink’s existing annotation interface to permit the uploading of images alongside the text and hyperlinks it already supported.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Lanza with Sterner (for a preview control), Lerman (for drag-and-drop upload functionality), and Kilar (for sharing via social networks). Similar combinations were also asserted based on the Fink reference.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate. The petition asserted that the trial date in the parallel district court litigation was speculative due to a pending motion to transfer venue and significant court backlogs caused by the COVID-19 pandemic. Furthermore, the district court case was in its earliest stages, with minimal investment made on validity issues and key deadlines, such as the claim construction order and expert discovery, scheduled to occur well after the IPR institution deadline. Petitioner contended it had acted with diligence by filing the petition shortly after the Patent Owner identified the asserted claims, and that the strong merits of the invalidity grounds weighed heavily in favor of institution.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 4, 5, 12, 14, 16-19, 23-25, 27, and 30 of the ’278 patent as unpatentable.